Appeal No. 1997-2828
Application No. 08/087,548
Rejections based on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior art. All the
claims under appeal require polybutene. However, this claim element is not suggested
by the applied prior art. In that regard, while Abber does teach the use of polybutene in
cross-linked, transdermal composition, Abber does not teach or suggest using a
polybutene in liquid form as an ingredient of a noon-aqueous, pour-on, water-fast
composition. To supply these omissions in the teachings of the applied prior art, the
examiner made determinations that these differences would have been obvious to an
artisan. However, we find these determinations have not been supported by any
evidence that would have led an artisan to arrive at the claimed invention.
In our view, the only suggestion for modifying in the manner proposed by the
examiner to meet the above-noted limitations stems from hindsight knowledge derived
from the appellants' own disclosure. The use of such hindsight knowledge to support
an obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
We find it unnecessary to reach the rebuttal evidence of appellant as we find the
examiner has not met the burden of setting forth a prima facie case of unpatentability
based on obviousness. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445
(Fed. Cir. 1992), In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
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